Software Protection
(part of Software Legal Relations lecture
held 6th
October 2010)
MVV59K Software Law
2 Lecturer
Mgr. Jaromír Šavelka
Institute of Law and Technology
Faculty of Law
Masaryk University
Room no. s61 (office hours Tue 14:30 – 16:30)
Email: jaromir.savelka@law.muni.cz
Phone: +420 549 495 377
ICQ: 279544589
3 Overview
• Classic means of protection
– Workload distribution
– Technical Measures
• Legal protection
– Trade Secret Protection + Unfair Competition Law
– Contractual Clauses (internal, B2B)
– Intellectual Property Protection
Classic Means
of Protection
5 Classic Means of Protection
• Well-thought distribution of individual
tasks
• Technical Measures
– Internal
– External
• General confidentiality
6 Classic Means of Protection
• Always applicable
• Not regulated by law
⇒No specific restrictions
⇒No legal enforceability
• Possible decrease of work efficiency
• Some measures might be expensive
Trade Secret
Protection
8 Trade Secret Protection
Definition (USA)
(4) "Trade secret" means information, including a formula,
pattern, compilation, program, device, method, technique, or
process, that:
(i) derives independent economic value, actual or potential, from
not being generally known to, and not being readily
ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use, and
(ii) is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy.
(Art. 1 para 4 Uniform Trade Secrets Act of 1985)
9 Trade Secret Protection
Definition (CZE)
Trade secrets include commercial, manufacturing and
technological facts relating to the enterprise which have actual
or potential material or nonmaterial value, are not commonly
available in the business circles in question, and are to be
kept confidential at the discretion of the entrepreneur, who
ensures that his enterprise's secrets are protected in a
suitable manner.
(section 17 of the law no. 513/1991 Coll., Commercial Code)
10 Trade Secret Protection
• An activity of the trade secret owner is
required => adequate/suitable protection
• Requirement for nonavailability =>
information is not generally known
What about software that is distributed
at the massmarket.
11 Trade Secret Protection
Enforceability:
An entrepreneur has the right to legal protection against
violation or jeopardising of his trade secrets, as in the case of
unfair competition.
(section 20 of the law no. 513/1991 Coll., Czech Commercial Code)
• Through the means of Unfair Competition
Law
12 Trade Secret Protection
• Works as a legal extension of the classic
means of protection
• Flexibility
• Guarantees no protection against
independent discoveries
• Doubtful effectiveness in case of the
software distributed at the massmarket
13 Trade Secret Protection
The aim is to …
… prevent unfair exploitation of the other
person’s effort and resources
… promotion of the research and innovation
Contractual Clauses
15 Contractual Clauses
• Not available automatically => the parties
have to enter into a contract
• Whole contracts or individual clauses
(usually license, sale or lease agreements)
16 Contractual Clauses
Types:
• Confidentiality clause
• Confidential information
• Non-competition agreement
17 Contractual Clauses
• Flexibility
• Corresponds to the intentions of the parties
• Effective only inter partes
• Unclear validity of certain clauses
Intellectual Property
Protection
19 Intellectual Property Protection
• Copyright Protection
– Berne Convention
• Patent Protection
– Paris Convention
• Trademark Protection
– Paris Convention, Madrid Protocol, Madrid Agreemnet
20 Intellectual Property Protection
Individual types of Intellectual Property
Protection does not protect software as a whole.
X
They rather protect individual elements of
Software.
21 Intellectual Property Protection
• At the beginning of the 70's there were
three potential ways to approach the
question of IP Protection of SW:
– Copyright protection
– Patent Protection
– Sui Generis Protection
Intellectual Property
Protection
Copyright Protection
23 Copyright Protection
• In USA the National Commission on New
Technological Uses of Copyrighted Works
(CONTU) appointed in the 70's.
• The outcome of its research
= recommendation to extend the
applicability of copyright protection to SW
• Nowadays = most dominant type of
Intellectual Property Protection
24 Copyright Protection
• In EU 2009/24/EC directive on the legal
protection of computer programs
• In Czech Republic implemented by law no.
121/2000 Coll. (Copyright Act)
25 Copyright Protection
Extent of the Protection:
• Right to make a copy
• Right to make available
• Right to lease an original or a copy
• Right to lend an original or a copy
• Right to display …
• Right to broadcast …
• etc.
26 Copyright Protection
Limits of the Protection:
• Operation of computer programs
• Reverse Engineering
27 Copyright Protection
• Applies automatically
• Does not give rise to software monopolies
• Protects a material form of the work
• Does not make information inaccessible
Intellectual Property
Protection
Patent Protection
29 Patent Protection
• Does not protect the work in material form =>
protects underlying ideas and principles
• Necessary to undergo lengthy and expensive
application process
• May lead to software monopolies
• Promotes free access to information
30 Patent Protection
• Tendencies to allow software patentability appeared
in the time when copyright protection was being
introduced.
• Invention = any new and useful process, machine,
manufacture, or composition of matter, or any new
and useful improvement
• The definition was narrowed by the courts =>
software was excluded from the patent protection.
31 Patent Protection
Landmark cases:
– In re Bredley (1979)
– In re Diehr (1981)
– In re Abele (1982)
– In re Alappat (1994)
32 Patent Protection
• In Czech Republic software excluded from
patent protection
The following in particular shall not be regarded as inventions:
a) discoveries, scientific theories and mathematical methods;
b) aesthetic creations;
c) schemes, rules and methods for performing mental acts, playing
games or doing business and programs for computers;
d) presentations of information.
(Section 3 para 2 of Czech Patent Act)
Intellectual Property
Protection
Trademark Protection
34 Trademark Protection
Definition:
“A trade-mark is a word, design, number, two-dimensional or
three-dimensional form, sound or color, or a combination of
two or more of these elements which a trader uses to
distinguish his/her products or services from those of his/her
competitors and serves to establish goodwill with the
consumer.”
(Intellectual Property Institute of Canada)
35 Trademark Protection
36 Trademark Protection
• Protects exclusive connection between
the manufacturer or reseller of the
software and the software itself (as goods
or service)
• Prevents an unfair misuse of the
Trademark during the distribution of the
software